Third Amendment to Exclusive License Agreement

This Third Amendment to the Exclusive License Agreement (this “Amendment”) is entered into as of April 27, 2011 (the “Effective Date of this Amendment”), by and between The George Washington University (“University”) and Protea Biosciences, Inc., (“Company”) having a place of business at 955 Hartman Run Road, Suite 210, Morgantown, West Virginia 26507. University and Company may each be referred to herein individually as “Party” and collectively as the “Parties”. The Exclusive License Agreement effective as of December 1, 2008 which was amended as set forth in the Amended and Restated Exclusive License Agreement effective as of February 22, 2010, further amended via the second amendment effective as of January 14, 201l (the “Second Amendment”) and all appendices and exhibits thereto are collectively referred to herein as the “the First Amended Agreement”.

 

 

WHEREAS, the Parties hereto desire to amend the terms of the First Amended Agreement to further reflect certain additional understandings with respect to the First Amended Agreement.

 

NOW, THEREFORE, for and in consideration of the mutual terms and conditions set forth herein and other good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, the parties agree as follows:

 

1.      Defined Terms. All capitalized terms used herein and not otherwise defined herein shall have the meanings given to those terms in the First Amended Agreement.

 

2.      Amendment of the Whereas Clauses. The first four “whereas” clauses shall be deleted in their entirety and replaced with the following:

 

WHEREAS, University and Company desire to clarify certain provisions of the First Amended Agreement, particularly, but not exclusively, with respect to the 3D imaging technology an additional technology relating to High Throughput Single Cell Analysis by Plume Focusing in Laser Ablation Electrospray Ionization (LAESI) Mass Spectrometry and patent prosecution responsibility;

 

WHEREAS, University and Company desire to amend and restate the First Amended Agreement to include such clarifications;

 

WHEREAS, University is the owner of certain rights relating to the LAESI technology, the 3D imaging technology, LAESI Detection of Metabolic Changes In Cells Upon Viral Infection technology, LAESI Analysis of small cell populations and single cells by consecutive laser pulses and High Throughput Single Cell Analysis by Plume Focusing in Laser Ablation Electrospray Ionization (LAESI) Mass Spectrometry; and”

 

Third Amendment to Amended and Restated Exclusive		File Name: Third Protea Contract Amendment Signature
License Agreement February 22, 2010	1	Final May 4 2011 (2).Doc

 

3.      Amendment to Section 1.3 “University Technology Rights.” Section 1.3 “University Technology Rights” shall be deleted in its entirety and replaced with the following section:

 

“University Technology Rights” shall mean the University’s rights in technical information, know how, processes, procedures, compositions, devices, methods, formulas, protocols, techniques, software, designs, drawings, or data that are created by Akos Vertes (Inventor) at the University relating to subject matter disclosed in the applications set out in Exhibit A, or relating to the Laser Ablation Electrospray Ionization (LAESI), 3D imaging technology, and LAESI Detection Of Metabolic Changes In Cells Upon Viral Infection technologies and LAESI application to small cell populations technologies including the technology as described in the University invention disclosure entitled “Subcellular Analysis by Laser Ablation Electrospray Ionization (LAESI) Mass Spectrometry”, a copy of the invention disclosure statement is attached as Exhibit B to Second Amendment, and High Throughput Single Cell Analysis by Plume Focusing in Laser Ablation Electrospray Ionization (LAESI) Mass Spectrometry, a copy of the invention disclosure is attached as Exhibit B to this Third Amendment, which are useful or desirable for practicing such technologies and/or the inventions described by the University Patent Portfolio.

 

4.      Amendment to Section 10.14. Section 10.14 “Entire Agreement”. Section 10.14 shall be deleted in its entirety and replaced with the following section:

 

This Agreement, including the exhibits hereto, constitutes the entire understanding between the Parties with respect to the subject matter contained herein and cancels and supersedes any and all prior agreements, understandings;, and arrangements whether oral or written between the Parties relating to the subject matter hereof.

 

5.      Amendment to Exhibit A. Exhibit A shall be deleted in its entirety and replaced with the following exhibit:

 

EXHIBIT A

Application No. Filing Date		Title		Inventor(s)
12/176,324 18 July 2008		Laser Ablation Electrospray Ionization (LAESI) for Atmospheric Pressure, In Vivo, and Imaging Mass Spectrometry		Vertes, Akos; Nemes; Peter;
12/323,276 25 Nov 2008		Three-dimensional Molecular Imaging by Infrared Laser Ablation Electrospray Ionization Mass Spectrometry		Vertes, Akos; Nemes, Peter
May5, 2011 13/101,518		Continuation of US Patent Application number 12/323,276		Vertes, Akos; Nemes, Peter
12/774,533		Methods for Detecting Metabolic States by Laser		Vertes, Akos;

 

Third Amendment to Amended and Restated Exclusive		File Name: Third Protea Contract Amendment Signature
License Agreement February 22, 2010	2	Final May 4 2011 (2).Doc

05 May 2010		Ablation Electrospray Ionization Mass Spectrometry		Kashanchi, Fatah; Sripadi, Prabhakar; Kehn-Hall, Kylene
13/045,277 March 10,2011		Subcellular Analysis by Laser Ablation Electrospray Ionization (LAESI) Mass Spectrometry		Vertes, Akos; Stolee, J.; Shreshtha, B.
PCT/US09/51157 20 July 2009		LAESI for Atmospheric Pressure, In Vivo and Imaging Mass Spectrometry		Vertes, Akos; Nemes, Peter
PCT/US09/65891 25 Nov 2009		Three-dimensional Molecular Imaging by Infrared Laser Ablation Electrospray Ionization Mass Spectrometry		Vertes, Akos; Nemes, Peter
To be filed		Canadian National Phase of PCT/US09/65891		Vertes, Akos; Nemes, Peter
To be filed		Japanese National Phase of PCT/US09/65891		Vertes, Akos; Nemes. Peter
To be filed		European Regional Phase of PCT/US09/65891		Vertes, Akos; Nemes, Peter
PCT/US10/33757 05 May 2010		Methods for Detecting Metabolic States by Laser Ablation Electrospray Ionization Mass Spectrometry		Vertes, Akos; Kashanchi, Fatah; Sripadi, Prabhakar; Kehn-Hall. Kvlene

 

6.      Reaffirmation; Conflicts. Except as expressly amended by this Amendment, the Agreement is and shall continue to be in full force and effect as originally written. This Amendment shall be deemed to revise the terms and provisions specifically referenced herein. In the event of a conflict between the terms and provisions of this Amendment and the terms and provisions of the Agreement, this Amendment shall govern; provided, however, that the fact that a term or provision appears in this Amendment but not in the Agreement, or in the Agreement but not in this Amendment, shall not be interpreted as, or deemed grounds for finding, a conflict for purposes of this Section.

 

7.      Execution in Counterparts; Effectiveness; Severability. This Amendment may be executed in any number of counterparts and by any combination of the parties hereto in separate counterparts, each of which counterpart shall be an original and all of which when taken together shall constitute one and the same Amendment. This Amendment shall become effective as of the date first above written when and if counterparts of this Amendment shall have been executed by the parties hereto. If any section, paragraph, clause, or provision of this Amendment shall for any reason be held to be invalid or unenforceable, the invalidity or unenforceability of such section, paragraph, clause, or provision shall not affect any of the remaining provisions of this Amendment, the intent being that the same are severable.

 

On and after the effective date of this Amendment, each reference in the Agreement to “this Agreement,” “hereunder,”, “hereof” or words of like import referring to the Agreement shall mean and be a reference to the Agreement as amended by this Amendment.

 

Third Amendment to Amended and Restated Exclusive		File Name: Third Protea Contract Amendment Signature
License Agreement February 22, 2010	3	Final May 4 2011 (2).Doc

 

8.      Section References. Section titles and references used in this Amendment shall be without substantive meaning or content of any kind whatsoever and are not a part of the agreements among the parties hereto evidenced hereby.

 

9.      Governing Law. THIS AMENDMENT SHALL BE DEEMED MADE AND PREPARED AND SHALL BE GOVERNED, CONSTRUED AND INTERPRETED IN ACCORDANCE WITH THE INTERNAL LAWS OF THE DISTRICT OF COLUMBIA, WITHOUT REGARD TO PRINCIPLES OF CONFLICT OF LAWS THEREOF WHICH MAY REQUIRE THE APPLICATION OF THE LAW OF ANOTHER JURISDICTION.

 

IN WITNESS WHEREOF, the undersigned have executed this Amendment as of the day and year first above written.

/s/ Leo M. Chalupa

Name:

Title:

The George Washington University

 

/s/ Stephen Turner

Name:

Title:

PROTEA BIOSCIENCES, Inc.

 

[Signature Page to the Third Amendment to Exclusive License Agreement]

Third Amendment to Amended and Restated Exclusive		File Name: Third Protea Contract Amendment Signature
License Agreement February 22, 2010	4	Final May 4 2011 (2).Doc

Exhibit B

 

The George Washington University Invention Disclosure entitled “High Throughput Single Cell Analysis by Plume Focusing in Laser Ablation Electrospray Ionization (LAESI) Mass Spectrometry”

 

Third Amendment to Amended and Restated Exclusive		File Name: Third Protea Contract Amendment Signature
License Agreement February 22, 2010	5	Final May 4 2011 (2).Doc